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Saturday, October 27, 2012

In what must surely come as a
rude-shock to Apple, the USPTO has issued a non-final rejection (available here) of Apple’s
patent over the “bounce back/rubber band” feature which Apple successfully asserted
against Samsung in the US.

The non-final rejection was
issued in an ex parte re-examination
of the patent US7469381. It has been reported
that Samsung has brought this development to the notice of
District Judge Lucy Koh who presided and continues to preside over the
Apple-Samsung patent trial.

All 20 claims of the patent were
invalidated, including claim 19 which claims the bounce-back feature.

Sunday, October 21, 2012

On October
19, 2012, in a suit instituted by Eros International, C.S.(O.S.) 3163/2012, the Delhi
High Court issued “John Doe” order against unknown defendants in relation to
the film “Chakravyuh”, besides restraining named defendants such as Jyoti Cable
Network from communicating, making available, distributing, duplicating,
displaying, releasing, showing, exhibiting in the film in any manner without obtaining
prior authorization/license from Eros International.

Saturday, October 20, 2012

In an interesting development,
Cipla has abandoned its patent application 733/MUMNP/2004 relating to “A
combination of Azelastine and steroids” which had 50 claims. The application was abandoned after a pre-grant opposition was filed against it. Here is the 8-page
decision delivered on October 14, 2012 by the Mumbai Patent Office, of which 6 pages contain only the claims of the application.

Friday, October 19, 2012

In what must certainly be one of
the fastest appeals and decisions, in a 10-page
judgment delivered on October 17, 2012, a Division Bench of the Delhi High
Court has stayed (not set aside as I had incorrectly written) the order dated October 15, 2012 of the Learned Single Judge restraining the allegedly defamatory use of the
trademark “Bata” in the song “Mehngai” in the movie “Chakravyuh”.

Following are the relevant
excerpts from the decision of the DB:

“3. The issue raised in the appeal is of great public importance in the
context of fundamental rights of the citizens to freely express themselves on
social issues and thus we would be inclined to hear detailed submissions in the
appeal but are constrained to pen this short order inasmuch as the
cinematographic film in question is scheduled to be released in India on
October 24, 2012. Only two more working
days remain as per the calendar of this Court before the Autumn recess commences. The appellant seeks a stay of the operation
of the impugned order.

4. We are informed that as far as the international premier is concerned,
the movie in question has already been launched with a premier show held in
London on October 11, 2012 and that the offending lyrics in the song have been
on the “You Tube” by way of promotionals since mid September 2012.

5. Since the appeal came up
for hearing today in the forenoon and we do not have the requisite time to view the cinematographic film
we take on record the statement made by the learned senior counsel appearing
for the appellant as well as for the first respondent that the theme of the cinematographic
film is the burning social issue of disparity in the distribution of wealth
created in the nation : Fight of values and thought between the “haves” and “have nots”.

We are informed that the textual setting of the cinematographic
film reflects a class struggle between the State, which is perceived by a section of the society to be capitalist oriented,
vis-à-vis those who believe that the
social philosophy of the State should be of a kind which facilitates a fair
distribution of the wealth created i.e. meets the need of all and the greed of
none. It is this esoteric thematic
setting which finds an exoteric expression in the movie which shows to the
viewer the struggle between the Maoists and the State.

13. Mr.Sandeep Sethi, learned senior counsel appearing for the appellant
urges that notwithstanding four business houses being named in the song, the
understanding of the song would not be with reference to a particular house but
to a class which propagates the ideology of industrialization. And, brings out
a call to those who propagate the ideology of socialism to unite and fight.

Following are the operative
portions of the order:

19. The movie raises a burning social issue which we find is a matter of
public debate on the streets and the press.
The struggle between the “haves” and the “have nots”.
The struggle for political power and the control over the
philosophy of the State.

20. Would the traditional legal principles evolved by Courts on the subject
of rhetorical language or hyperbole be sufficient guidance for Judges to
resolve issues when expressions are used with respect to social issues? Is a question which needs to be seriously
considered and answered.

This is the
reason why we are deferring hearing but penning our thoughts as aforesaid to
bring out the richness in the public debate and especially in the modern
societies where contemporary entities compete in the interdependent
industrialized world and perhaps in this competition the individual organized
industry of the common man renders him incapable of fighting an organized
industrial establishment.

To wit : When a prosperous person goes into depression and commits or attempts
to commit suicide, what else is the phenomenon other than the individual
organized industry falling apart against the onslaught of modernization.

21. Seen with the viewpoint as
herein above, we do not prima facie find that in its contextual setting, viewed
and heard as a whole, the song is derogatory or defamatory of the House of
Bata. Four leading and well-known
industrial houses have been named and the statement naming them is prima-facie
not likely to be taken literally by the viewer/listener.

22. Deferring further hearing of the appeal till November 07, 2012, the
operation of the impugned order is directed to be stayed.

The rational appears to be that
given the backdrop of the story, use of the names of popular business houses is
a reference to capitalism, and not a targeted assault on the entities per se.

Considering that a good section of
the audience is not capable of making such a nuanced distinction, I am not sure
I agree with the rationale. Also, would the logic of the Court’s decision apply
even to public individuals who enjoy a clean reputation?...

Wednesday, October 17, 2012

In a 66-page
judgment delivered on October 15, 2012, a Learned Single Judge of the Delhi
High Court has restrained the makers of the movie “Chakravyuh” from “releasing,
transmitting, distributing, exhibiting, performing or communicating to the
public by any means or technology, aural or audio visual performance of the impugned
song “Mehngai” using the name of the
plaintiff therein till final disposal of the suit.”

The relevant extracts of the
lyrics of the song in which the name “Bata” is used is as follows:

“Birla Ho Ya Tata Ambani Ho Ya Bata,

Apne Apne Chakar Mein Desh Ko Hai Kata

Birla Ho Ya Tata Ambani Ho Ya Bata

Apne Apne Chakar Mein Desh Ko Hai Kata

Are humre hi khoon se inka engine chale

dhakadhak, Aam admi ki jeb ho gai hai safa

chat, aam aadmi ki jeb ho gai safachat.”

The lyrics refer to corporate
corruption in the country and name prominent Indian business houses, including
popular footwear maker “Bata”.
Among other things, Bata filed a “quia
timet”/pre-emptive action suit for infringement of its trademark/name,
passing off and defamation. Summing up the issues in the case, the Court noted
as follows:

“15. In the facts of the present case, the core issue involved is
whether the defendants have transgressed the right to freedom of expression and
speech through the song “Mehngai”. Another important question to be answered by
this Court in the present case is whether pre-emptory injunction can be granted
by the Court to restrain the defendant from transmitting and exhibiting the
said song “Mehngai” or the only remedy
is to claim damages after proving such defamation in trial.”

Citing decisions of the Supreme Court,
the Court noted that motion pictures had a deeper impact on its audience that
books and that the freedom of expression under Article 19(2) was not absolute. Applying
the principles enumerated in SC’s decisions and those of the Delhi High Court,
the Court observed thus in Para 25 on the facts of the case:

“25. Applying the above enunciated principles, in my considered view in
the present case in the song in question, the defendants have used expressions that are offensive
towards the plaintiff. The tenor of such
expressions suggests that the engines
of the industries of the plaintiff are run by the blood of the common
public.

Such expressions undoubtedly
have the propensity to cause lasting damage to the well established reputation
of the plaintiff and in my view the use of the said expression would certainly harm
and jeopardize the credibility and reputation of the plaintiff in the
estimation of the common public. This Court also cannot find any justification
for the use of such derogatory expressions
in the song and such expressions prima facie cannot stand the test of
either fair comment or based on truth or in the public or societal interest.”

The context of the Defendants’
contention that the movie had been cleared by the Censor Board and that no
objections were raised by the Plaintiff on the Censor Board’s decision to clear
the movie along with the allegedly defamatory song, the Court observed thus:

“In my considered view, none of
the above contentions raised by the counsel for the
defendants could justify the
act of the defendants in
using the name of the plaintiff with such a disparagement to the extent of attributing that the plaintiff has looted
the country and that they are
running their industry by the blood of
the people.

This is no doubt a serious attack on the reputation and goodwill of
the plaintiff and with the use of such
defamatory expressions the defendants cannot take shelter by using the same
with a disclaimer. Even otherwise it
is inconceivable that the use of a
disclaimer in any way can help so far transmitting of the said song on You-Tube, through CDs or other
media sites is concerned as the disclaimer will confine to the viewers of the
film and not to all those who will merely listen the song.”

On whether Bata’s suit was barred
by the Cinematographic Act which governs grant of viewership certification to
cinematograph films, the Court’s views are definitely worth reading:

“27. This court also does not find any merit in the contention raised
by the counsel for the
defendant that the remedy of the
plaintiff to file a civil suit is barred
due to the remedy available to the plaintiff under Section 6 of the Cinematographic Act 1952. There is no provision in the Cinematographic Act 1952 which excludes the jurisdiction of the civil court
to try and entertain a civil suit.

It is a settled legal position that a provision of law ousting the
jurisdiction of the civil court must be strictly construed and exclusion of the
jurisdiction cannot be easily inferred unless such exclusion is either
explicitly expressed or clearly implied.
This court also does not
find any specific provision in the Cinematographic Act which can grant an urgent and immediate relief to the grievance of an individual in a case
like the present where
the grievance of the
individual pertains to intending loss of its reputation and goodwill.

The entire scope of Cinematographic Act is to regulate the exhibition
of films for evolving and entertaining the society through the film makers, exhibitors and the
connected team with such activities and define the role of the Central Board of
Film Certification and of the Central
Government.

The Act does not specifically provide for any remedy or grant any such relief
to redress the grievances of the individuals or private citizens and
institutions etc. against screening of
any film or objectionable scene in the films Ordinarily, the courts do not
interfere with the decision taken by
expert bodies, but that would not
imply that the citizen whose fundamental
rights are violated is left remediless
and that the recourse to approach the
court to challenge the decision of the
expert body is not available”

Para 30 of the judgment for me is
a must read in order to understand the balance to be struck between artistic license
and responsibility:

"30. At omega, this court would
like to observe that cinema is not only an entertainment industry but also a potent
weapon for social change. From a six to a sixty year old, everyone derives and
takes home something from a movie and it has the power to evoke emotions and
shape the outlook of the common man towards various issues like none other. The
film makers have since yore mirrored social ills plaguing the society which
movement continues till date with igniting the minds and being responsible for various
social movements leading to monumental changes in the social setup.

However with this
responsibility to bring to the public domain the realities of our diverse nation,
there comes a duty to act cautiously not to make inroads in the lives and dignity
of people and institutions alike in the garb of being the messiahs of social
change. Thus the film makers have no unbridled right to tarnish the image and reputation of any
individual or institution, that too in the absence of any foundation for
the same. One cannot be oblivious of the fact that the main stay of the film industry is not only
entertainment but also commercial gains
and in this pursuit to earn huge profits the cinema makers have no
right to trample upon,disrepute or disparage the reputation of others.”

In its Letters Patent appeal,
Cipla has raised precisely the question as I had in my last post. No interim
stay order had been granted by the Learned Single Judge on the post-grant
revocation of Sugen’s patent, and yet Cipla was restrained from marketing its
drug. Apparently, although Sugen sought a stay, a stay was not granted, instead
an injunction was granted against Cipla.

Here is Para 4 of the order:

“4. This order is questioned
on the ground that on the application for stay along with writ petition, the
learned Single Judge had not granted any
interim order and only directed notice,
when second application for stay with
similar prayer was filed, the learned Single Judge entertained and granted the
above order. Further, in the absence of
any prayer for direction to the appellant herein not to take any steps for
marketing its drugs, the learned Single Judge should not have granted such an
order. "

Despite noting the above, the
Division Bench of the HC which was presided by the Hon’ble Chief Justice of the
CH, held as follows:

“6. We have considered the above submissions. On perusal of the order under appeal, it is
seen that though the learned Single Judge has on 05.10.2012 only ordered notice
in first stay application filed by the second and third respondents returnable
by 15.10.2012, but having noticed that in the absence of stay, the appellant was
intending to market the product before 15.10.2012, has on 08.10.2012,
restrained the appellant from marketing the product, only till 15.10.2012. This being a discretionary order considering
the prima facie case, we are not inclined to interfere, particularly, when the
learned Single Judge is seized of the stay applications that would be heard on
15.10.2012, which is the next working day after today.

The points, whether the order of the Assistant Controller is bad in view
of Section 25 (3) and (4) of the Patents Act and whether the writ is not maintainable
in the face of availability of alternate remedy of appeal are still to be considered by the learned
Single Judge on the next date of hearing and for that reason, we are not
inclined to go into that aspect.

7. For the disposal of this appeal, it is suffice for us to mention
that the interim order is one of interim arrangement till the next working day
after today and was passed on considering the prima facie case, particularly
the subsequent event that had taken place after notice of the stay application had
been issued.

8. Hence, we do not find any merit to entertain this appeal. This appeal is accordingly dismissed.”

An anonymous commentator commented
on the last post informing that Cipla sought an adjournment before the Learned Single
Judge yesterday in Sugen’s writ petition (which was the originally fixed date
for hearing), and accordingly hearing in the petition has been adjourned to
December 6, 2012.

Apparently, (which is subject to
verification) the Court has ordered that the interim order restraining Cipla
from marketing its drug shall continue until December 6, 2012.

In my last
post, I had blogged on Cipla’s appeal against an order
of the Single Judge restraining Cipla from taking any steps to manufacture
its drug until October 15, 2012. This order was passed on October 8, 2012 in a
Writ Petition W.P.(C) 6361/2012 filed by Sugen Inc (not in a suit, as I
incorrectly mentioned in my last post) against the post-grant revocation of its
patent by the Controller on September 24, 2012.

I thank the same alert friend for
bringing this order to my attention and more importantly, for sharing his thoughts
on the issue with me.

The primary ground of challenge
appears to be that Sugen Inc was not provided a copy of the recommendations of
the Opposition Board in the post-grant opposition proceedings. This, according
to Sugen, was a violation of the principles of natural justice, and hence
rendered the revocation order a “nullity”.

Readers may collect the order of
the IPAB dated August 3, 2012 in Diamcad
N.V. and Anr. v. Sarin Technologies where it was categorically held
by the IPAB that the recommendations of the opposition board must be shared
with the patentee in order for him to rebut the recommendations, if they
adversely affect him.

The Learned Single Judge presiding over the writ
petition also took the prima facie view that the contention of Cipla
that there is no requirement under the Act to share the recommendation of
Opposition Board, was not convincing. Accordingly, Cipla was restrained until
October 15, 2012 from taking any steps to market its drug.

There appears to a slight issue with the order of
the Single Judge. The post-grant opposition order of the IPAB revoking Sugen’s
patent on Sunitinib was not stayed, and yet Cipla was restrained from marketing
its drug.

My point is the post-grant order ought to have been
stayed if Cipla was sought to be restrained, however if no such stay was
granted against the operation of the revocation of the patent, then what is the
legal ground for restraining Cipla?

Monday, October 15, 2012

On October 13, 2012, Law
et al reported that the Delhi High Court has reserved its verdict in an
appeal filed by Cipla challenging an injunction granted by the Delhi High Court
in a writ petition filed by Sugen Inc. I thank a friend for bringing this news report to my attention.

The appeal was against a decision
of the Single Judge restraining Cipla from taking any steps to market its drug.

I was recently asked if a
defendant/alleged infringer in a suit for trademark infringement needs the
Court’s permission under Section 124 of the Trademarks Act, 1999 to file a
rectification against the plaintiff’s mark.

In my opinion, the object of Section
124 is to connect filing of a rectification petition to the Court’s obligation to stay the suit proceeding, and not to impose fetters on
a defendant’s right to file a rectification petition.

Before I proceed with
interpreting Section 124, it needs to be pointed out that under Section 125 of
the Act, where there is a trademark infringement suit pending before a court or
issues of trademark validity have been raised before a court, and
no rectification petition has been filed, it shall be filed only before the
IPAB, and not the registrar for Section 124 to be applicable.

If however, there is a pending rectification
proceeding before the registrar, that is sufficient to invoke Section 124. This
is reflected by Section 124(1)(i).

Now, moving to the import of
Section 124, let’s start with the provision itself:

124. Stay of proceedings where
the validity of registration of the trade mark is questioned, etc.(1) Where in any
suit for infringement of a trade mark-

(a) the defendant pleads that registration of the plaintiff’s trade
mark is invalid ; or

(b) the defendant
raises a defence under clause (e) of sub-section (2) of section 30 and the
plaintiff pleads the invalidity of registration of the defendant’s trade mark,
the court trying the suit (hereinafter referred to as the court), shall,-

(i) if any proceedings for rectification of the register in relation to
the plaintiff’s or defendant’s trade mark are pending before the Registrar or
the Appellate Board, stay the suit pending the final disposal of such
proceedings;

(ii) if no such proceedings are pending and the court is satisfied that
the plea regarding the invalidity of the registration of the plaintiffs or
defendant’s trade mark is prima facie tenable, raise an issue regarding the
same and adjourn the case for a period of three months from the date of the
framing of the issue in order to enable the party concerned to apply to the
Appellate Board for rectification of the register.

(2) If the party concerned proves to the court that he has made any
such application as is referred to in clause (b) (ii) of sub-section (1) within
the time specified therein or within such extended time as the court may for
sufficient cause allow, the trial of the suit shall stand stayed until the
final disposal of the rectification proceedings.

(3) If no such application as aforesaid has been made within the time
so specified or within such extended time as the court may allow, the issue as
to the validity of the registration of the trade mark concerned shall be deemed
to have been abandoned and the court shall proceed with the suit in regard to
the other issues in the case.

(4) The final order made in any rectification proceedings referred to
in sub-section (1) or sub-section (2) shall be binding upon the parties and the
court shall dispose of the suit conformably to such order in so far as it
relates to the issue as to the validity of the registration of the trade mark.

(5) The stay of
suit for the infringement of a trade mark under this section shall not preclude
the court from making any interlocutory order (including any order granting an
injunction, directing account to be kept, appointing a receiver or attracting
any property), during the period of the stay of the suit.

On a reading of the provision, it
bears out that for Section 124 to apply, the defense of invalidity of the
registration of the mark must be raised by the defendant. Now comes the
interesting part.

In sub-clause (i) of Sub-section
(1), the word used is “shall” i.e. if the defense of invalidity is raised, the
Court “shall” do the following:

Situation A. If a rectification
proceeding is already pending before the Registrar or the IPAB, the Court “shall”
stay the suit until the disposal of the rectification proceeding. The point to
be noted is, there is no express power under this situation for the Court to
consider the prima facie tenability of the rectification proceeding i.e. it
does not appear possible for the Court to form an opinion on the tenability of
the rectification petition. It can only grant a stay.

Situation B. If no rectification
proceeding is filed, it is in this situation that the Court may
prima facie assess the tenability of trademark invalidity plea of the
defendant. Only if the Court is prima facie satisfied with the plea, it “shall”
adjourn the suit for 3 months to allow the defendant to file a rectification
petition before the IPAB. This also means that the Court must pass a reasoned
order as to why it believes there exists a prima facie case of invalidity of
the mark.

Under Situation B, once the
defendant proves to the Court that he has indeed moved a rectification petition
before the IPAB, the trial of the suit “shall” be stayed until the
rectification petition is finally decided.

If despite time extensions
allowed by the Court, the defendant fails to file a rectification proceeding,
the Court shall treat this as waiver of the invalidity plea. It
must be noted that there is still no bar in filing of the rectification
proceeding by the defendant. The only consequence is that the Court is under no
obligation to stay the suit. In fact, under sub-section (3), the Court shall
proceed with the suit.

What is critical is sub-section
(5) because it dispels a popular myth that the Court cannot issue an interim
injunction before staying the suit under Section 124. The sub-section is
abundantly clear on the position that there are no fetters on the grant of
equitable/interlocutory reliefs by the Court, which includes an interim
injunction besides maintaining accounts.

In other words, it is possible
for the Court to issue an interim injunction and stay the trial in the suit
until the rectification petition is decided. Theoretically, there could be
several instances where the Court may permit the defendant to file a rectification
petition before the IPAB, and yet deem it fit to grant an interim injunction to
maintain status quo.

I realize this could be
inconsistent with the prima facie finding
that there is merit in the plea of invalidity of registration. That said, the
very nature of equitable reliefs is to cater to factual peculiarities in a
particular case. Therefore, filing of an rectification petition before the IPAB
need not necessarily translate to denial of interim injunction to the plaintiff.

Conclusion:

1. Section 124 does not limit the
Defendant’s right to file a rectification petition. It only requires him to
file it before the IPAB if such filing is after the institution of the suit.

2. There is no bar on the power
of the court to grant any interim reliefs before the
suit is stayed.

Saturday, October 13, 2012

Section 31(d)
of the Patents Act, 1970 states that an invention shall be deemed to have been
anticipated by reason only of the description of the invention in a
paper read by the true and first inventor before a “learned society” or
published with his consent in the “transactions of such a society”, if
the application for the patent is made by the true and first inventor or a
person deriving title from him not later than twelve months after...
the reading or publication of the paper, as the case may be.

The Act
does not define the word “learned society” nor does it elaborate on what constitutes a “transaction”. In the absence of these terms, is it possible to bring
anything and everything under the sun within the scope of the terms?

The scope
of both the terms must be circumscribed in a manner that the scope does not run
counter to the legislative intent reflected in the choice of such words. This
is because sometimes undefined terms are subjected to unduly broad
interpretations which do not find statutory sanction.

How does
one infer legislative intent with respect to Section 31(d)? It would help to
peruse provisions of the Act which deal with anticipation, namely Sections
29-34.

In
particular, Section 34 clearly states that circumstances not covered under
Section 29-33 would anticipate a patent specification. In other words, the Act
defines what is not anticipatory, and those which do not fall within the
penumbras of the windows carved out in Sections 29-33, shall be deemed to
anticipate a patent specification. Negative definitions are typically
interpreted strictly since they are caveats as to what is not permissible.

Therefore,
words such as “learned society” and “transaction” too must be interpreted in a
manner which gives effect to the negative definition of anticipation.

The term “learned
society” usually alludes to a peer group which has been constituted with the
object of promoting knowledge and scholarship in a specific field of human
activity. The interpretation of “learned society” depends on the use of the
word “transaction”.

This is
because, under Section 31(d), for the publication to not anticipate a patent
specification, the nature of the publication must be a “transaction”. In other
words, the use of the word “transaction” as opposed to a blanket “publication”,
serves a specific purpose. Not all publications of a learned society qualify
for the exemption under Section 31(d), only publications in the “transactions
of a learned society” can rely on the provision to fend off allegations of
anticipation.

Section
31(d) appears to have English origins. Section 51(2) is reproduced below:

“An
invention claimed . . . shall not be deemed to have been anticipated by reason
only of—(d) the description of the invention in a paper read by the true and
first inventor before a learned society or published with his consent in the
transactions of such a society”

What is
relevant is that the English Act too does not provide definitions of “learned
society” and “transactions”. In Ethyl
Corporation’s Patent (1963 RPC155) and Ralph M. Parsons
Application (1978 FSR 226), the UK Courts had an opportunity to
elaborate on the terms wherein it was held thus:

1.The reason for not defining the term
“learned society” is because it would have required the legislature to set a
qualitative threshold for the word “learned”.

2. To avoid unduly broad interpretation
of the word “learned”, the term transaction was used in place of “publication”.

3. On the term transaction,
in Ralph M. Parsons Application, it was
observed as below:

“An
essential prerequisite of a publication, if it is to be regarded as
“transactions” is that it should be published under the auspices of and finally
be the responsibility of the Association—the learned society—whose organ of
publication it is.”

4. These “transactions” are
for the private consumption of members
of the learned society as a recordal of the society’s proceedings, and which
are not published for consumption by non-members in return for a fee or
otherwise. In other words, if the publication is accessible to non-members, it
would lose the quality of “publication in a transaction”, and could hence
anticipate a patent specification.

The
problem with the provision is that the way “learned societies” like SAE or IEEE
function, the distinction between a “publication in a transaction”, and “publication
of a transaction” is nearly moot because articles which are published in “transactions”
are available for non-members too.

So how
would Courts purposively construe the provision to ensure that the spirit of “limited
exceptions to anticipation” is not undermined? Comments are welcome!

In a 3-page
order dated August 22, 2012 which seems to have been uploaded on the Delhi
High Court’s website only recently, the High Court has dismissed my PIL as “misconceived” on grounds of "locus standi". I thank an anonymous commentator for bringing the order to my attention.

Of the 5 Paragraphs in the order, Paras 1-3 reproduce excerpts from the PIL in
toto. The operative portions of the
order read as follows:

“3. We are afraid such a kind of writ petition cannot be entertained as
PIL. The petitioner is trying to
advance the cause of those persons who are neither indigent nor illiterate nor
vulnerable groups. They are not persons
who cannot approach the Court themselves. The persons concerned with such
imports, who may be allegedly affected by the aforesaid provisions, are well
off importers and, therefore, if there is any grievance of any such person, he
can approach the Court.

4. Moreover, provisions of a particular Statute or Circular which is statutory
in nature cannot be challenged in vacuum.

5. We are, therefore, of the opinion that this petition as PIL is
totally misconceived and is accordingly dismissed.”

In short, according to the Court where it refers to "challenge in vacuum",
since there was no immediate “lis”,
meaning thereby a person who had been immediately affected by the Customs
notifications, a PIL was not warranted. Further, the Court took the view that
the ones who are bound to be affected by the Customs notification could
approach the Court themselves, and therefore the PIL could not be entertained.

To me, this is surprising because
if the Court believed that “locus standi”
was an issue, then it ought not to have issued a notice on the very first date (May
23, 2012) if it wasn’t satisfied on locus/maintainability. Instead, the Court issued notice on the first date, and
then dismissed the PIL on essentially technical grounds.

Subsequent to the issuance of
notice on May 23, 2012, the matter was again listed on July 25, 2012 when no
questions on maintainability were raised. Finally the matter was listed for
arguments on August 22, 2012. On the said date, the Court primarily heard
arguments on the interpretation of Section 107A(b).

After hearing me at length on the
provision, at the fag end of the hearing the Court posed a question on “locus standi”. To this, I drew the attention of the Hon’ble Court
to specific introductory portions of the PIL which are mandated by the Delhi
High Court’s Public Interest Litigation Rules, 2010.

Under these Rules, it is
imperative on the part of the Petitioner to make an averment which explains his
locus, and that he has the ability to
pay costs if they are imposed by the Court.

In the PIL, I had specifically
taken the stance that the Customs notification has a bearing on consumers of
patented products as well, since ultimately Section 107A(b) entails consumption
of the imported patented products by Indian consumers. The only issue to be addressed was who could import and how. Therefore, there is a tangible public interest involved in deciding whether or not the provision
envisages a “free for all” importation into India.

I also drew the High Court's attention to judgments of the
Supreme Court on locus standi in
PILs. Unfortunately, none of these judgments seem to have been addressed in the
brief order of the Court.

That said, the only silver lining in the order is
that no adverse observation has been passed with respect to the interpretation
of Section 107A(b). To this extent, the law on the provision still remains
unsettled and inconclusive.

Friday, October 12, 2012

In three
earlier posts I have discussed the Information Technology (intermediaryguidelines) Rules, 2011 which were notified by the Ministry of Information
Technology of the Government of India on April 11, 2011. The Rule that appears
to be giving sleepless nights to intermediaries is Rule 3, which has 11 sub-rules.
Only those sub-rules of Rule 3 which are relevant to this post are reproduced below:

3. Due
diligence to be observed by intermediary — The intermediary shall observe
following due diligence while discharging his duties, namely : —

(1) The intermediary shall publish the rules and
regulations, privacy policy and user agreement for access-or usage of the
intermediary's computer resource by any person.

(2) Such rules
and regulations, terms and conditions or user agreement shall inform the users
of computer resource not to host, display, upload, modify, publish, transmit,
update or share any information that —

(a) belongs to
another person and to which the user does not have any right to;

(d) infringes
any patent, trademark, copyright or other proprietary rights;

(e) violates
any law for the time being in force;

(f) deceives or misleads the addressee about the
origin of such messages or communicates any information which is grossly
offensive or menacing in nature;

(g) impersonate
another person;

(h) contains
software viruses or any other computer code, files or programs designed to interrupt, destroy or
limit the functionality of any computer resource;

(i) threatens the unity, integrity, defence,
security or sovereignty of India, friendly relations with foreign states, or
public order or causes incitement to the commission of any cognisable offence
or prevents investigation of any offence or is insulting any other nation.

(3) The
intermediary shall not knowingly host or publish any information or shall not initiate
the transmission, select the receiver of transmission, and select or modify the information contained in the
transmission as specified in sub-rule (2):

provided that
the following actions by an intermediary shall not amount to hosting, publishing,
editing or storing of any such information as specified in sub-rule: (2) —

(a) temporary or transient or intermediate
storage of information automatically within the computer resource as an
intrinsic feature of such computer resource, involving no exercise of any human
editorial control, for onward transmission or communication to another computer
resource;

(b) removal of
access to any information, data or communication link by an intermediary after such information, data
or communication link comes to the actual knowledge of a person authorised by
the intermediary pursuant to any order
or direction as per the provisions of the Act;

(4) The intermediary, on whose computer
system the information is stored or hosted or published, upon obtaining
knowledge by itself or been brought to actual knowledge by an affected person
in writing or through email signed with electronic signature about any such
information as mentioned in sub-rule (2) above, shall act within thirty six
hours and where applicable, work with user or owner of such information to
disable such information that is in contravention of sub-rule (2).
Further the intermediary shall preserve such information and associated records
for at least ninety days for investigation purposes.

The common assumption appears to be that Sub-rule
4 requires the intermediary to take down material upon receipt of notice from
an affected person within 36 hours, without asking any questions or without
having the freedom to apply his mind. I don’t think this assumption is reflective of the true position of the law.

This is because sub-rule 4 says the
intermediary shall act within 36 hours and “where applicable, work with
user or owner of such information to disable such information that is in contravention
of sub-rule (2)”. The reference in the provision is to "information that is in contravention of sub-rule(2)", and not information that is claimed by the aggrieved person as contravening sub-rule (2). Therefore, there is no requirement to blindly take down material within 36
hours just because notice has been received from an “affected person”. The only requirement is to "act within 36 hours", which means to do something concrete to redress the grievance of the affected person.

What happens when the "affected person" claims that information sought to
be taken down attracts sub-rule 2(d), which refers to
infringement of IP rights? Here too, the caveat applies.
This means the intermediary has the right to determine if the information
sought to be taken down is indeed infringing the IP rights of the affected party.

This is also borne out from an interpretation
of Sections 79, 81 and Proviso to Section 81. Following are the said provisions:

(1) Notwithstanding anything contained in any law for
the time being in force but subject to the provisions of sub-sections (2) and
(3), an intermediary shall not be liable for any third party information, data,
or communication link made available or hosted by him.

(2) The provisions of sub-section (1) shall apply if
the function of the intermediary is limited to providing access to a
communication system over which information made available by third parties is
transmitted or temporarily stored or hosted; or

(b) the intermediary does not -

(i) initiate the transmission,

(ii) select the receiver of the transmission, and
(iii) select or modify the information contained in the transmission;

(c) The intermediary observes due diligence while
discharging his duties under this Act and also observes such other guidelines
as the Central Government may prescribe in this behalf.

(3) The provisions of sub-section (1) shall not apply
if -

(a) the intermediary has conspired or abetted or aided
or induced, whether by threats or promise or otherwise in the commission of the
unlawful act;

(b) upon receiving actual knowledge, or on being
notified by the appropriate Government or its agency that any information, data
or communication link residing in or connected to a computer resource,
controlled by the intermediary is being used to commit the unlawful act, the
intermediary fails to expeditiously remove or disable access to that material
or that resource without vitiating the evidence in any manner.

Explanation: For the purposes of this section, the
expression "third party information" means any information dealt with
by an intermediary in his capacity as an intermediary

Section 81:
Act to have overriding effect- The provisions of this Act shall have effect
notwithstanding anything inconsistent therewith contained in any other law for
the time being in force.

Provided that nothing contained in this Act shall
restrict any person from exercising any right conferred under the Copyright
Act, 1957 (14 of 1957) or the Patents Act, 1970 (39 of 1970)

A combined reading of Sections
79, 81 and the Proviso to 81 bears out the following:

A. Section 79 prevails
over any provision
contained in any law, which includes all other provisions of the Information
Technology
Act (including Section 81 of
the Act).

B. Section 81 says
the provisions of the IT Act (including Section 79) shall prevail over any “other
law” (which means laws other than the IT Act).

C. The Proviso to
Section 81 says that the exception to the over-riding effect of the IT
Act under Section 81 are the rights available to any person under the
Copyright Act or the Patents Act. This means that neither Section 79 nor Section 81 or any other
provision of the IT Act truncates or limits the exercise of the legitimate
rights available to “any person” under the Copyright Act or the Patents Act.

D. Critically,
the reference to
“any person” in the Proviso is not just to a right owner. In fact, it includes all third parties
who are entitled to exercise fair use and fair dealing rights under the Copyright Act and Patents Act.
This includes intermediaries.

Therefore, an
intermediary has the right to decide whether or not the material sought to
taken down by an IP right owner amounts to an infringement. If the material does
not infringe any right, and has been uploaded in exercise of the
intermediary’s legitimate rights under the Copyright or Patents Act, he need
not take down the material.

Wednesday, October 10, 2012

In a short order dated October 8, 2012,
the Intellectual Property Appellate Board (IPAB) has ruled that an order passed
by the Controller of Patents in a review petition under Section 77(1)(f) of the
Patents Act is not appealable before the IPAB.

The conclusion was arrived at on
literal interpretation of Section 117A of the Act since under the said
provision only decisions, orders or directions of the Controller issued under
the provisions expressly mentioned in Section 117A(2) are appealable before the
IPAB.

Support was drawn from Order 47,
Rule 1 of the Code of Civil Procedure under which there is no appeal from an
order passed in a review petition.

Some might argue that an order
passed in a review petition is still an order passed under the original
provision which governs the proceeding. Simply put, a review of a decision
under Section 15 could still be treated an order under Section 15. Therefore, another appeal from the order in the review petition must lie. The counter
to this is that, if an appeal against the original decision is already provided
for under the Act, there is no reason to provide for an additional appeal
against the review order as well.

In a 5-page
order dated October 9, 2012, the Chennai Patent Office rejected Novartis
AG’s patent application on “An Ethanol-free Pharmaceutical Composition” which
was filed in 2006.

The application was rejected
after hearing the applicant under Section 14 of the Patents Act since,
according to the Patent Office, the applicant’s response to the second examination report did
not overcome the objections raised by the Patent Office.

The primary objections were under
Section 3(e) and Section 10(5) of the Act. Despite claims being amended by the applicant,
the Patent Office was of the view that the amended claims attracted Section
3(e) and did not comply with Section 10(5). The amended claims were as follows:

1. A pharmaceutical foam composition substantially free of ethanol and comprising
pimecrolimus in a carrier vehicle comprising a mixture of oily solvents amounting
to atleast 40% of the total weight of the composition and consisting of:

i. Hexylene glycol in the range of 1% to 10%

ii. Optionally Oleyl alcohol in
the range of 1% to 20%and

iii. Dimethyllisosorbide in the
range of 35% to 90% and medium chain triglycerides
in the range of 5% to 20% and additionally:

iv. Hydroxypropyl cellulose and /or stearyl alcohol in the range of 0.1% to
5%

v. p_hydroxybenzoic acid ester with ethyleneglycol phenylether in the range of 0.1% to 0.5% and

vi. glyceryl monostearate in the
range of 1 to 3% and non-ionic sugar
esters and butane/propane 80/20 as
propellant gas for foaming.

2. A Pharmaceutical foam composition substantially free of ethanol and
comprising a mixture of and Pimecrolimus in a carrier vehicle comprising a
mixture of oily solvents amounting to atleast 40% of the total weight of the
composition and consisting of:

i. Hexylene glycol in the range
of 2% to20%

ii. medium chain triglycerides in
the range of 50% to 80% and optionally Dimethyl lisosorbide in the range of 0%
to20% and additionally:

iii. Water in an amount less
than 25%

iv. polyvinylpyrrolidine and stearyl
alcohol in the range of 1% to 10%

v. p_hydro xyberuoic acid ester
with ethylenegrycor phenyrether in the rangeof 0.1% to 0.5% and

vi. glyceryl monostearate in the
range of I% to 3% and lecithin; andbutane/propane 80/20
as propellant gas for foaming.

The Patent Office seems to have had issues with the fact that the components claimed in Claims 1 and 2 are not
identical, and even where the components are identical, their range differs. This,
according to the Office, ran afoul of the requirement of unity of invention
(single inventive concept). Also, the Office took the view that the claims weren’t
clear and succinct.

Therefore, according to the Office, the claims did not comply with Section 10(5) of the Act which states
that “claims shall relate to a single
inventive concept, and shall be clear and succinct and shall be fairly based on
the matter disclosed in the specification.”

Also, the Patent Office observed
that no experimental data had been provided by the applicant to establish that
the claimed compositions exhibited synergistic effect over and above the prior
art.

There is also a cursory
observation that the patent application claims subject-matter which is barred
under Section 3(e) i.e. “a substance
obtained by mere admixture resulting only in the aggregation of the properties
of the components therof or a process for producing such substance”.

The problem with the order is
that it is tersely-worded and does not give a reader a clear picture as to what
according to the Patent Office is the specific relationship between the
components claimed in Claim 1/their range, and the inventive step sought to
be protected by the applicant.

Had this been clarified, one
would have been in a better position to understand how different is the
inventive step in Claim 2 due to different ranges and components being claimed.

In other words, how do the
components and their ranges in Claims 1 and 2 affect the preamble of the claim,
namely “A pharmaceutical foam composition
substantially free of ethanol and comprising pimecrolimus in a carrier vehicle
comprising a mixture of oily solvents amounting to atleast 40% of the total
weight of the composition..”

Also, there is no
elaboration on the finding on Section 3(e). This in itself could render the
decision reasonably appealable before the IPAB under Section 117A.

It would really help if decisions
of the Patent Office reflect application of mind by the Office. At least this
way, the ground of “absence of reasoning” could be done away with in an appeal.

Monday, October 8, 2012

Rediff.com has reported today that Vijay Mallya-run United Spirits has settled its long-running trademark feud pending before the Delhi and Calcutta High Courts with its competitor Allied Blenders and Distillers (ABD) over the popular whisky brand "Officers Choice", which is being used by ABD currently .

Apparently, United Spirits has been offered INR 8 Crores by ABD for relinquishing its claim over the brand, which is reportedly the largest selling whisky brand in India as on date.

Following is a timeline of the
TVS-Bajaj twin-spark plug patent dispute which is pending before the Madras High Court:

TVS filed
a suit, C.S.No.979/2007, before
the Madras High Court against Bajaj Auto Limited on grounds that Bajaj’s threats
of infringement of its patent IN195904 by TVS were groundless. TVS also
sought a declaratory judgment that its 125CC bike “Flame” did not infringe
Bajaj’s patent. An interim relief was sought to restrain Bajaj from
interfering with the manufacture and sale of “Flame”.

Bajaj
filed a suit, C.S.No.1111/2007,
before the Madras High Court against TVS for infringement of its patent IN195904.
Among other reliefs, an interim injunction was also sought.

19.12.2007-
Single Judge of Madras High Court restrained TVS from booking “any further
orders” with the liberty to execute orders which had already been
received.

20.12.2007-
TVS appealed and a Division Bench (DB) of Madras High Court set aside the
Single Judge’s order

18.01.2008-
Bajaj filed Special Leave Petition (SLP) before the Supreme Court. SC set
aside the Division Bench’s order and permitted sale of TVS’s bikes booked
until 18.01.2008. However, according to the SC, no further bookings were
to be received by TVS until 28.01.2008. Also, SC directed the Single Judge
of Madras HC to take up hearing of interim applications on 29.01.2008.

29.01.2008-
Madras HC Single Judge commenced hearing. TVS undertook to not receive any further booking in respect of “Flame”.
Matter gets listed for hearing on 30.01.2008

Hearing
commenced on 30.01.2008.

February 16, 2008- Madras
HC Single Judge issued an interim injunction against TVS in favour of
Bajaj

TVS
appealed to a Division Bench of the High Court and on May 18, 2009, DB
vacated the interim injunction and ordered expedited trial in the matter

Against
the order of the DB, Bajaj filed an SLP before the Supreme Court. On September 16, 2009, SC
chose not to interfere with the Madras DB’s order and directed expedited
trial. Also, the Single Judge of Madras HC was directed to dispose off the
suit by November 30, 2009.

November
25, 2009- Issues were framed by the Single Judge of Mad HC

March
10, 2010- Single Judge of Madras HC ordered Bajaj to prove its case first.

October 4, 2010- Bajaj
again appealed to the DB against the order dated March 10, 2010. In the
appeal, the DB of Madras HC ordered TVS to prove its case first since it
was the first party to file C.S.No.979
of 2007. In other words, since it was the plaintiff in the suit for
groundless threats of infringement (which was filed first), the onus was
on TVS to prove non-infringement of Bajaj’s patent. Therefore, TVS had to first
lead evidence of non-infringement.

September 21, 2011-
TVS’s application under Order 18, Rule 3 of the Code of Civil Procedure
and application for joint trial were allowed by the Single Judge of the
Madras HC.

According to the Supreme Court’s
order of September 16, 2009, the suits were to be disposed off by November 30,
2009. After the last order of September 21, 2011, I am not sure if any more
orders were passed in the matter.
The Madras HC’s official website too does not seem to contain a list of
orders passed in the matter after September 2011.

One hopes the joint trial in this
matter commences soon because it would be interesting to see an Indian Court apply
the law in a non-pharma patent trial.

Sunday, October 7, 2012

I had earlier blogged on the judgment of a Division bench
of the Delhi High Court in Dr.Alloys Wobben v.
Yogesh Mehra & Ors. delivered on January 20, 2012, in which the the DB had held that both
a counter-claim and a revocation petition could be explored simultaneously
against the same patent.

In a
related contractual dispute between the parties which appears to be the root of all contentions between the parties, the Bombay High Court
delivered its decision (available here) on October 5, 2012 in
Writ Petitions filed by Enercon India against orders passed by the District
Judge of Daman. According to the decision, both warring factions have been directed to resolve their disputes through arbitration provided for in the Intellectual Property License Agreement (IPLA) previously entered into between the parties.The detailed facts leading to the writ petitions are as follows:

5. A
Technical Know-How Agreement was entered into in 1994 between Enercon GmBh and
Enercon India under which Enercon Gmbh agreed to transfer to Enercon
India the right and the technology to use the technical know-how for the
manufacture of E-26 Wind Turbine Generators

6. A
Supplementary Technical Know-How Agreement entered into
in 2000 amended the 1994 agreement and granted a licence to Enercon India to manufacture
the E-30 and E-40 Wind Turbine Generators.

7. The Agreement
expired in 2004, however Enercon GmBh continued to supply Wind Turbine
Generators and components to Enercon India.

8. In 2006,
parties entered into a comprehensive arrangement by
the name “Agreed Principles” which governed the use and supply of windmill
technology. Under the Agreed Principles, parties further entered into an Intellectual Property License Agreement ("IPLA")
on September 29, 2006, which was the subject matter of the dispute between the
parties in the Writ Petitions.

According to Enercon India:

A. “the Agreed Principles are the binding
principles agreed between the parties, and which records an agreement that all
definitive agreements between the parties that were to be prepared and finally
executed would be on the basis of the binding principles agreed therein. One of
the agreements contemplated by the said Agreed Principles was the IPLA”

B. “the IPLA signed in September 2006 was merely
a draft of the oral terms and not a concluded contract between the parties. It
was their case that the said document was an unincorporated and inchoate
document and was not a concluded contract”

C. This,
according to Enercon India, was supported by a communication received by it from
a representative of Enercon Gmbh dated October 4, 2006 in which it was conveyed
by the representative that she “would try
her best to prepare/adapt the agreements according to the Agreed Principles”.

D. On October
18, 2006, the same representative informed Enercon India that the IPLA signed
in September 2006 was the final document.

Subsequent to
this, parties exchanged notices arguing on whether or not the IPLA was final and
binding. Enercon GmBh stopped supplying generators and components to Enercon
India and litigation ensued, which is captured in brief below:

Litigation between the Parties

i. Enercon India
filed a suit before the Bombay HC seeking an interim relief to the effect that supply
of generators and components be resumed. Enercon GmBh did not comply with the
order, resulting in the filing of a contempt petition against it by Enercon India.

ii. In response, Enercon GmBh
moved the Company Law Board, Delhi for removal of Mehra brothers as directors of
Enercon India. The Mehra brothers in turn filed a company petition against Enercon
BmBh for oppression and mismanagement.

iii. Besides, Enercon
GmBh also secured an ex parte injunction
from the Hamburg District Court against Enercon India restraining the latter
from supplying generators under the trademarks of Enercon GmBh. The injunction was
subsequently set aside by the Hamburg Court on grounds of lack of evidence against
Enercon India.

Finally in March
2008, Enercon GmBh evinced interest in settling all outstanding disputes with
Enercon India, including the question of the IPLA, and invoked the arbitration
clause provided for in the IPLA. Enercon India responded stating that since the
IPLA was not a concluded contract, there was no valid arbitration agreement in
place. Also, according to Enercon India, by its litigious conduct Enercon GmBh had waived the arbitration
agreement.

Enercon GmBh then
filed for a declaratory judgment in a UK Court against Enercon India, inter alia seeking an
anti-suit injunction against Enercon India to restrain it from continuing with
the suit proceedings before the Bombay High Court.

On its part, Enercon India
filed a suit before Senior Division Judge, Daman seeking – “a declaration that the IPLA was not a
concluded contract and correspondingly that there was no Arbitration Agreement
between the parties; for a declaration that the initiation of proceedings
before the English Court by the Respondents was void and illegal; and for a
permanent injunction restraining the Respondents from continuing with the
proceedings before the English Court”.

The Senior Division Judge, Daman passed an ex parte order restraining Enercon GmBh
from proceeding with the suit before the UK Court. Subsequently, Enercon GmBh appeared before the Daman
Judge and moved an application under Section 45 of the Arbitration Act
contending that the suit must be referred to arbitration under the IPLA. The
Senior Division Judge dismissed Enercon GmBh’s application and confirmed the anti-suit
injunction.

Enercon GmBh
appealed to the District Judge, Daman who set aside the decision of the Senior
Division Judge on the grounds that since the Mehra Brothers had signed in the
IPLA in September 2006, it was a concluded contract, and hence the arbitration
clause was valid.

Against this
decision of the District Judge, Enercon India and Mehra brothers preferred writ petitions before the Bombay High Court.

Writ Petitions before the Bombay High Court

In the
Writ Petitions filed by Enercon India and the Mehra Brothers (Petitioners), the Bombay High Court concluded that the IPLA was a concluded
contract, and that the arbitration agreement too was valid, based on the
following reasons:

A. 19.The inquiry contemplated under Section 45
is therefore of a prima facie nature of the existence of an Arbitration
Agreement. If the Court comes to a prima facie conclusion that there is an
Arbitration Agreement and the same is legal and valid, the matter must be
referred to the Arbitral Tribunal for further consideration which can
thereafter conclusively decide either way. If the Court comes to the prima
facie conclusion that there is either no Arbitration Agreement or that the same
is not valid in law, the Court must then proceed to determine the same finally
and conclusively.

B. 22.... The aforesaid Judgments of the Apex
Court as well as the United States Supreme Court, make it clear that the
Arbitration Agreement would survive even in case of invalidity of the main
agreement or the underlying contract. It is only in cases where the underlying
contract is vitiated by fraud, coercion or misrepresentation that the same
would impact the Arbitration Agreement. 23 The principles of severability and
separability of the Arbitration Agreement is common both under the English
Arbitration Act, 1996 and the Indian Arbitration Act 1996...

C. 24....The Learned Senior Counsel for the
Petitioners laid much store on the correspondence post 29-9-2006 i.e. the date
when the IPLA was signed, to contend that the IPLA was not a concluded
contract. However, the correspondence prior thereto between the parties
indicates otherwise. If the said correspondence is seen, to which my attention
is drawn by the Learned Senior Counsel appearing for the Respondents, the same
discloses that it was on 27-6-2006 i.e. a good three months prior to its
execution,that the draft IPLA was sent to the Petitioners. The said IPLA had
already undergone changes on the basis of the suggestions of both the parties
and the final document was kept ready on 29-9-2006 as the Petitioner No.2 had
shown his inability to come to Aurich on 17-9-2006 when it was to be executed.

D. 24.... The most important
letter if it can be said so, is the letter dated 30-9-2006 which is addressed
by the Petitioner No.2 Yogesh Mehra in his own handwriting stating therein that
he has executed not one but more than one agreement on 29-9-2006. Pertinently
in paragraph 2 of the said letter, the Petitioner No.2 has in fact referred to
the patent of E-82 being the subject matter of the IPLA and not the Agreed Principles

E. 29. The defining aspect is the intention
of the parties to go for arbitration which intention is clearly manifest in the
IPLA.

F. 37 This Court has taken a prima facie view that there is in
existence an Arbitration Agreement and therefore the parties can be referred to
arbitration. In so far as instant Petition i.e. Writ Petition No.7636 of 2009
is concerned, the question is whether the Petitioners are entitled to an anti
suit injunction, and whether the English Courts have jurisdiction.

G. 38 The adjudication of the said aspect therefore
revolves around the interpretation of clause 18.3 of the IPLA. For the sake of
convenience, the said clause 18.3 is revisited herein under for the purposes of
the present Petition. "Clause 18.3---- All proceedings in such arbitration
shall be conducted in English. The venue of the arbitration proceedings shall
be London. The arbitrators may (but shall not be obliged to) award costs and
reasonable expenses (including reasonable fees of counsel) to the Party(ies)
that substantially prevail on merit. The provisions of the Indian Arbitration
and Conciliation Act, 1996 shall apply"

On the basis of this clause, the Bombay High
Court finally concluded as follows in Para 55:

55. On an interpretation of clause 18.3 of the IPLA this
Court has reached a conclusion that the curial law or Lex Arbitri would be the
Indian Arbitration Act. Though the Indian Arbitration Act would apply, however,
in view of the fact that the parties have chosen London as the venue for the
arbitration meetings, the English Courts would have concurrent jurisdiction and
therefore the jurisdiction of the English Courts can also be invoked by the
parties for taking such measures as are required in support of arbitration. The
judgment and order of the Lower Appellate Court on the aspect of anti suit
injunction is, therefore, sustained but on a different ground which is
mentioned in the body of this Judgment.